Appeal No. 1996-3797
Application No. 08/070,162
19) for the examiner's reasoning in support of the rejections and to the appellants' brief
(Paper No. 18) and reply brief (Paper No. 20) for the appellants' arguments thereagainst.
Obviousness is a legal conclusion based on the underlying facts. Graham v. John
Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966); Continental Can Co. USA, Inc.
v. Monsanto Co., 948 F.2d 1264, 1270, 20 USPQ2d 1746, 1750 (Fed. Cir. 1991); Panduit
Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1566-68, 1 USPQ2d 1593, 1595-97 (Fed.
Cir. 1987). Here, the dispositive question is whether one of ordinary skill in this art at the
time of the invention would have found it obvious to prepare a human cell line cloned from a
cell which has been stably transformed by a recombinant vector comprising a reporter
gene which is operatively linked to a human IL-4 response element that is capable of
inducing expression of the reporter gene in response to IL-4.
Critical to all of the examiner's rejections is the disclosure of Suter which the
examiner would combine with the remaining references as a basis of establishing a prima
facie case of obviousness within the meaning of 35 U.S.C. § 103. The examiner has cited
Suter as disclosing the Fc RII nucleotide sequence as well as the Fc RII IL-4 responsiveE E
element and the insertion of this DNA segment into the expression vector pCMVcat,
wherein CMV is a promotor and cat is a reporter gene. The examiner urges that Suter
describes the transfection of Human Jijoye cells (Compare appealed claim 5) with this
plasmid using DEAE dextran method of transfection. (Answer, page 3). The examiner
urges that these transformed cells are used to demonstrate that IL-4 induces the
expression of FcERII via the assessment of Cat activity. (Answer, page 4). The examiner
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